DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The submission filed on 07/23/2024 has been entered. Claims 1-5 are pending in this application and are currently under examination.
Priority
This is US Application No. 18/733,430 filed on 06/04/2024 and claims foreign priority of JAPAN 2023-094936 filed on 06/08/2023.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 07/23/2024 has been considered.
Claim Objections
Claim 4 is objected to because of the following informalities: In claim 4, move the recitation “replaced” (line 2) to the location immediately before the recitation “with a” (line 3) for a grammatically correct expression. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 2-5 depend from claim 1.
Claim 1 recites “at least one selected from the group consisting of ammonium, an alkylamine, and an amino alcohol, and an acid” (lines 9 to 10), in which two “and” are recited and thus it is not clear if the Markush group is up to amino alcohol or acid. Applicant is advised to change the above recitation to “at least one first solute selected from the group consisting of ammonium, an alkylamine, and an amino alcohol; and an acid as a second solute”, supported by the Specification, [Mobile Phase], p. 4 to 5.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kempson et al. (J. Org. Chem. 2021, 86, 8851−8861, hereinafter referred to as Kempson ‘2021).
With regard to structural limitations “a method of a supercritical fluid chromatograph, comprising: injecting a sample into a mobile phase containing a supercritical fluid and a modifier to introduce the sample into a column; and separating components in the sample during passing through the column; wherein the sample comprises an oligonucleotide (or having at least one phosphorothioate linkage) as a target component; the supercritical fluid comprises carbon dioxide; and the modifier comprises a solution containing ammonium and an acid (or acetic acid or bicarbonate)” (claims 1, 2, and 4):
Kempson ‘2021 disclosed supercritical fluid chromatography (SFC) conditions for compound 27 (
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): BEH 2-ethylpyridine (25 × 5 cm, 5 μm), 40% MeOH/H2O (95:5) with 10 mM NH4HCO3 in CO2, 35 °C, 350 mL/min, 220 nm, 100 bar BPR, 12.56 mg/mL, 3 mL/2 min. SFC conditions for BMT-390025 (
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, non-natural phosphorothioate cyclic dinucleotide STING agonist) were as follows: BEH 2-EP (25 cm × 5 cm, 5 μm), 65% MeOH/ACN/water (47.5:47.5:5) with 20 mM ammonium acetate in CO2, 230 mL/min, 220 nm, 47 °C, 100 bar BPR, 40 mg/mL, 3.75 mL/3.3 min (page 8857, right col., para. 1; page 8851, Abstract).
Thus, these teachings of Kempson ‘2021 anticipate Applicant’s claims 1, 2, and 4.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kempson et al. (J. Org. Chem. 2021, 86, 8851−8861, hereinafter referred to as Kempson ‘2021) in view of Ashraf-Khorassani et al. (J. Sep. Sci. 2010, 33, 1682–1691, hereinafter referred to as Ashraf ‘2010). Claims 1, 2, and 4 are rejected here because they have been rejected under 102 above. The above disclosure of Kempson ‘2021 is thus incorporated in its entirety here.
Kempson ‘2021 did not explicitly disclose the limitations “a base sequence TAGC”, and “a stationary phase containing an alkyl alcohol”, required by claims 3 and 5.
Ashraf ‘2010 disclosed that Cyanopropyl, diol (=
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), and 2-ethylpyridine packed columns (250 x 4.6 mm, dp 5 mm, 60Å) were obtained from Princeton Chromatography. Supercritical fluid chromatographic separations were performed at 3 mL/min with the following step gradient regardless of the mobile phase components: Time zero: 80:20 CO2/modifier; time 6 min: 50:50, time 8 min: 50:50, time 8.5 min: 80:20, time 11 min: 80:20. Additives were incorporated into the alcohol modifier (v/v) prior to mixing with CO2. Water additive was 5% unless otherwise noted. Ammonium acetate (AA) was 20mM and formic acid (FA) was 0.5%. CO2 pressure and temperature were 200 atm and 40 oC. The sample solvent was methanol (200 ng/mL), and the injection volume was 5 mL. Separation of four component mixture (thymine, uracil, adenine, and cytosine) on cyano, diol, and pyridine columns with 25mM AA additive with either methanol (MeOH) or ethanol (EtOH) modifier:
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(page 1683, right col., para. 2; page 1688, Fig. 5).
Thus, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute the 2-ethylpyridine stationary phase and dinucleotide as taught by Kempson ‘2021 with diol (Propane-1,2,3-triol)-based stationary phase and other oligonucleotides having a combination of A, C, G, and T in view of Ashraf ‘2010, respectively, to separate any oligonucleotide effectively because the diol-based stationary phase along with methanol/AA mobile phase shows a better resolution of 4 different nucleobases than the cyan-based or 2-ethylpyridine-based stationary phase, described above. Thus, one of skill in the art would have a reasonable expectation that by substituting the 2-ethylpyridine stationary phase and dinucleotide as taught by Kempson ‘2021 with diol (Propane-1,2,3-triol)-based stationary phase and other oligonucleotides having a combination of A, C, G, and T in view of Ashraf ‘2010, respectively, to separate any oligonucleotide effectively, one would achieve Applicant’s claims 1-5. "Exemplary rationales that may support a conclusion of obviousness include: (B) Simple substitution of one known element for another to obtain predictable results". See MPEP § 2143 [R-01.2024] [I].
Conclusion
No claims are allowed.
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/YIH-HORNG SHIAO/Primary Examiner, Art Unit 1691
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